PCT – Part B
Guidelines for Search

Contents

Chapter I – Introduction

1.Purpose of Part B

2.The examiner

2.1Consultation with other examiners

2.2Search Division consisting of more than one examiner

Chapter II – General

1.International search and written opinion under Chapter I

2.Objective of the search

3.Search documentation

4.Search report

5.Time limit

6.Representation before the EPO as ISA or SISA

Chapter III – Characteristics of the search

1.Scope of the search

1.1Completeness of the search

1.2Effectiveness and efficiency of the search

1.3Search in analogous fields

1.4Search on the internet

2.The subject of the search

2.1Basis for the search

2.2Interpretation of claims

2.2.1Claims with explicit references to the description or drawings

2.3Obvious mistakes and missing or correct parts/elements

2.3.1General considerations

2.3.2Request for rectification of obvious mistakes (Rule 91)

2.3.3Incorporating missing parts or elements, or correct parts or elements, completely contained in the priority document

2.3.4Correct elements or parts notified after the start of the search and additional fee

2.4Anticipation of amendments to claims

2.5Broad claims

2.6Independent and dependent claims

2.7Search on dependent claims

2.8Combination of elements in a claim

2.9Different categories

2.10Subject-matter excluded from search

2.11Nucleotide and amino acid sequences

2.12Lack of unity

2.13Technological background

Chapter IV – Search procedure and strategy

1.Analysis of the application prior to searching

1.1Taking into account results of an earlier search and classification

1.2PCT Direct applications

1.2.1Requests for PCT Direct

1.2.2Processing of PCT Direct letters

1.3Third-party observations

1.4Documents cited in the application

2.Search strategy

2.1Subject of the search; restrictions

2.2Formulating a search strategy

2.3Carrying out the search; types of documents

2.4Reformulation of the subject of the search

2.5Closest prior art and its effects on the search

2.6End of search

3.Procedure after searching

3.1Preparation of the search report

3.2Amended international search report

Chapter V – Preclassification and IPC classification of international patent applications

1.Definitions

2.Preclassification (for file routing and distribution)

2.1Incorrect preclassification

3.IPC classification of the application

3.1Amended classification of late‑published search reports

3.2IPC classification when the scope of the invention is not clear

3.3IPC classification in cases of a lack of unity of invention

3.4Verification of the IPC classification

Chapter VI – The state of the art at the search stage

1.General

2.State of the art – oral disclosure, etc.

3.Priority

4.Conflicting applications

4.1Potentially conflicting European and international applications

4.2National prior rights

5.Date of reference for documents cited in the search report; filing and priority date

5.1Verification of claimed priority date(s)

5.2Intermediate documents

5.3Doubts as to the validity of the priority claim; extension of the search

5.4Documents published after the filing date

5.5Non‑prejudicial disclosures

5.6Matters of doubt in the state of the art

6.Contents of prior‑art disclosures

6.1General remark

6.2Citation of documents corresponding to documents not available or not published in one of the official EPO languages

6.3Conflict between abstract and source document

6.4Insufficient prior-art disclosures

6.5Incorrect compound records in online databases

7.Internet disclosures – technical journals

Chapter VII – Unity of invention

1.General remarks

2.Lack of unity at the search stage

3.No request for payment of additional search fees

4.Cascading non-unity

5.Documents relevant only to other inventions

6.Reply from the applicant to the invitation to pay additional search fees

6.1No payment of additional search fees

6.2Payment of additional search fees without protest

6.3Payment of additional search fees under protest

7.Protest procedure

7.1Admissibility of the protest as checked by the formalities officer

7.2The work of the Review Panel

8.Lack of unity and incomplete search

Chapter VIII – Subject-matter to be excluded from the search

1.General remarks

2.Subject-matter which the ISA is not required to search and examine

2.1Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body

2.2Subject-matter according to Rules 39.1(i), (iii), (v) and (vi)

2.2.1Computer‑implemented business methods

3.No meaningful search possible

3.1Examples of impossibility to perform a meaningful search over the whole of the claimed scope

3.2Nucleotide and amino acid sequences

3.3Informal clarification

3.3.1Informal clarification by telephone

3.3.2Informal clarification by written request

3.4Reply to the invitation for informal clarification

3.4.1Failure to reply in time or no reply

3.4.2Reply in time

3.5The content of the WO‑ISA after an invitation for informal clarification and/or in case of a restriction of the search

3.6Combination of an incomplete search and lack of unity

4.Multiple independent claims per category

Chapter IX – Search documentation

1.General

1.1Organisation and composition of the documentation available to the Search Divisions

1.2Systematic access systems

2.Patent documents arranged for systematic access

2.1PCT minimum documentation

2.2Unpublished patent applications

2.3Search reports

2.4Patent family system

3.Non‑patent literature arranged for systematic access

3.1Periodicals, records, reports, books, etc.

4.Non‑patent literature arranged for library‑type access

Chapter X – Search report

1.General

2.Different types of search reports drawn up by the EPO as ISA

3.Form and language of the search report

3.1Form

3.2Language

3.3Account of the search

3.4Record of search strategy

4.Identification of the patent application and type of search report

5.Classification of the patent application

6.Areas of technology searched

7.Title, abstract and figure(s) to be published with the abstract (as indicated on supplemental sheet A)

8.Restriction of the subject of the search

9.Documents noted in the search

9.1Identification of documents in the search report

9.1.1Bibliographic elements

9.1.2"Corresponding documents"

9.1.3Languages of the documents cited

9.2Categories of documents (X, Y, P, A, D, etc.)

9.2.1Particularly relevant documents

9.2.2Documents defining the state of the art and not prejudicing novelty or inventive step

9.2.3Documents which refer to a non‑written disclosure

9.2.4Use of "P" documents in the search report

9.2.5Documents relating to the theory or principle underlying the invention

9.2.6Potentially conflicting patent documents

9.2.7Documents cited in the application

9.2.8Documents cited for other reasons

9.3Relationship between documents and claims

9.4Identification of relevant passages in prior-art documents

10.Authentication and dates

11.Copies to be attached to the search report

11.1General remarks

11.2Electronic version of document cited

11.3Patent family members; the "&" sign

11.4Reviews or books

11.5Summaries, extracts or abstracts

11.6Citation of video and/or audio media fragments available on the internet

12.Transmittal of the search report and written opinion

Chapter XI – The written opinion

1.The written opinion

2.Basis of the written opinion (WO‑ISA)

2.1Applications containing missing parts or elements, or correct parts or elements, incorporated by reference

2.2Applications filed in Dutch

3.Analysis of the application and content of the written opinion

3.1The search division's dossier

3.2Reasoned objections

3.2.1Opinion on novelty, inventive step and industrial applicability

3.2.2Multiple independent claims

3.2.3Dependent claims – WO‑ISA

3.2.4Clarity, conciseness, support and formal defects – WO‑ISA

3.3Making suggestions

3.4Positive or negative WO‑ISA

4.Priority claim and the WO‑ISA

4.1Restoration of priority

4.2Use of "P" documents in the written opinion

4.3Use of "E" documents in the written opinion

5.Unity in relation to the written opinion

6.The written opinion in cases of a restriction of the search

7.Sequence listings

8.Options open to the applicant following receipt of the ISR and WO‑ISA

Chapter XII – Supplementary international search (SIS)

1.General

2.Time limits

3.Basis for the search

4.Scope of the search

5.Limitation of the search for reasons other than non-unity

6.Filling out the search report

7.Explanations under Rule 45bis.7(e)

8.Validity of priority and E/P documents

9.Copies of documents cited in the SISR

10.Non-unity

10.1General procedure

10.2Deciding what is to be considered the main invention

10.3The main ISA found that unity of invention is lacking

10.4Review procedure

11.Combination of SIS and Chapter II